Ex Parte Hill et al

Patent Trial and Appeal BoardMar 24, 2014

11102997 (P.T.A.B. Mar. 24, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/102,997 04/11/2005 David R. Hill 27592-01397-US3 6096 30678 7590 03/25/2014 NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP 1875 EYE STREET, N.W. SUITE 1100 WASHINGTON, DC 20006 EXAMINER HANNON, CHRISTIAN A ART UNIT PAPER NUMBER 2649 MAIL DATE DELIVERY MODE 03/25/2014 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DAVID R. HILL, ROGER DURAND, and FLOYD J. BACKES ____________ Appeal 2011-012138 Application 11/102,997 Technology Center 2600 ____________ Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012138 Application 11/102,997 2 STATEMENT OF THE CASE The Examiner finally rejected claims 1-38. Appellants appeal from the final rejection under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. INVENTION This invention relates to "background scanning of alternate channels in a WLAN." (Spec. 1). Claim 1, reproduced below, is representative of the claimed subject matter: 1. [a] Apparatus for providing wireless access to a plurality of client devices via at least one of a plurality of channels comprising: [b] at least one demodulation engine operable to receive radio frequency input on a plurality of channels; and [c] processing logic operable to [c1] control the demodulation engine to support communications on an active channel and [c2] contemporaneously scan at least one alternate channel, [c3] the processing logic being further operable to maintain a record indicative of detection of network device presence on a scanned alternate channel; and [d] processing logic operable to select one of the scanned alternate channels as a new active channel, and to prompt at least one of the client devices to begin operating on the new active channel. (Disputed limitations emphasized, elements lettered). REJECTIONS R1. Claims 1 and 20 stand rejected under 35 U.S.C. §102(e) as being anticipated by US 6,052,562 (Dorenbosch). (Ans. 3). Appeal 2011-012138 Application 11/102,997 3 R2. Claims 2-5 and 21-24 stand rejected under 35 U.S.C. §103(a) as being unpatentable over the combined teachings and suggestions of Dorenbosch and Nelson et al (US 6,515,971 B2). (Ans. 4). R3. Claims 6-19 and 25-38 stand rejected under 35 U.S.C. §103(a) as being unpatentable over the combined teachings and suggestions of Dorenbosch, Nelson and Backes (US 2005/0090250 A1). (Ans. 5). GROUPING OF CLAIMS Based on Appellants' arguments, we decide the appeal of the anticipation rejection R1 of claims 1 and 20 on the basis of representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii)(2004). 1 We address the rejections R2 –R3 separately, infra. ANALYSIS We disagree with Appellant's' contentions set forth in the Briefs regarding the Examiner's rejections of the claims. We adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons set forth by the Examiner in the Answer in response to arguments made in Appellants' Appeal Brief. (Ans. 11-13). We highlight and address specific findings and arguments below. 1 Appellants filed a Notice of Appeal on April 23, 2008. The date of filing the Notice of Appeal determines which set of rules applies to an ex parte appeal. If a notice of appeal is filed prior to January 23, 2012, then the 2004 version of the Board Rules last published in the 2011 edition of Title 37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to the appeal. See also MPEP Rev. 8, July 2010. Appeal 2011-012138 Application 11/102,997 4 R1. CLAIM 1 A. Regarding the claim 1 preamble "[a]pparatus for providing wireless access to a plurality of client devices . . . ," and limitation [c], Appellants contend: In contrast with Dorenbosch, the presently claimed invention recites that the fixed-location device via which network access is provided selects the operating channel. Note that the preamble of claim 1 recites "[a]pparatus for providing wireless access to a plurality of client devices via at least one of a plurality of channels." (App. Br. 8). Appellants further contend, "[i]t is well known in the art that access points and base stations are fixed location devices." (Reply Br. 12- 13). Appellants' contentions are not persuasive. Appellants' contention the preamble's "[a]pparatus for providing wireless access" requires the "apparatus" to be a fixed-location device is not commensurate with the claim limitations. Specifically, claim 1 is silent regarding a fixed-location device. Moreover, Appellants fail to cite a more narrow definition of "apparatus" in the Specification.2 2 Any special meaning assigned to a term "must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention." Multiform Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to a term a unique definition that is different from its ordinary and customary meaning; however, a patentee must clearly express that intent in the written description."). Appeal 2011-012138 Application 11/102,997 5 Regarding the claim 1 preamble "[a]pparatus for providing wireless access to a plurality of client devices," Appellants also contend "the claim preambles clearly recite that the thing providing access is selecting the new channel, whereas Dorenbosch clearly describes that the thing receiving access is selecting the new channel." (Reply Br. 13). Appellants' contentions are not persuasive. First, we conclude the claim 1 preamble "[a]pparatus for providing wireless access to a plurality of client devices," is a statement of intended use because the preamble does not further limit the claimed structure of the apparatus.3 Our reviewing court further guides the patentability of an apparatus claim “depends on the claimed structure, not on the use or purpose of that structure.” Catalina Marketing Int’l. Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 3 The determination of whether preamble recitations are structural limitations or mere statements of purpose or use “can be resolved only on review of the entirety of the [record] to gain an understanding of what the inventors actually invented and intended to encompass by the claim.” Corning Glass Works v. Sumitomo Elec., 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir. 1989). If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett- Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) (“where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation”). See MPEP 2111.02, Effect of Preamble, I., Eighth Edition August 2001, Revision August 2012. Appeal 2011-012138 Application 11/102,997 6 2002). Therefore, the preamble statement of intended use is not accorded patentable weight. Second, Dorenbosch discloses the claimed "[a]pparatus for providing wireless access," because Dorenbosch discloses all limitations of claim 1, including limitation [d]. (Ans. 3-4). For these reasons, on this record, we are not persuaded the Examiner erred. B. Regarding claim 1 limitation "[c] processing logic operable to [c1] control the demodulation engine to support communications on an active channel and [c2] contemporaneously scan at least one alternate channel," Appellants contend "scanning a channel list is not equivalent to actually scanning alternate channels . . . ." (Emphasis added; Reply Br. 16). Appellants' contentions are not persuasive because Appellants fail to address and rebut the Examiner’s specific findings regarding limitations [c] to [c2]. (Ans. 3; citing Dorenbosch col. 6, ll. 54-67; Ans. 12; citing Dorenbosch col. 6, ll. 54-57).4 Specifically, the Examiner finds Dorenbosch's "scanning frequencies to identify operable channels" (e.g., scanning channels or background scanning5), not upon scanning a channel 4 The Examiner made a typographical error on Ans. 12, citing to Dorenbosch col. 6, ll. 54-57, not ll. 54-67. However, the Examiner cited correctly to Dorenbosch col. 6, ll. 54-67 on Ans. 3 in the grounds of the rejection thereby providing Appellants notice of the finding. 5 The Examiner also finds that Dorenbosch's "background scanning" discloses limitation [c2]. (Ans. 12-13). We agree Dorenbosch's "background scanning" repeats the steps of the method including detecting multiple equivalent status channels, and thus discloses [c] to [c2]. (Ans. 13; Appeal 2011-012138 Application 11/102,997 7 list (col. 2, ll. 35-43) as Appellants contend, as disclosing the disputed limitations. (Emphasis added; Ans. 12-13; 3). More specifically, the Examiner finds Dorenbosch describes scanning frequencies/channels to identify operable channels6 thus disclosing limitations [c] to [c2]. Ans. 3, 13; Dorenbosch col. 6, ll. 54-67). Appellants fail to address and rebut the Examiner's specific findings. For these reasons, on this record, we are not persuaded the Examiner erred. Accordingly, we sustain the rejection of claim 1 and of claim 20, which falls therewith. R2 AND R3 Regarding rejections R2 and R3, Appellants do not present separate arguments for the claims under these rejections. Therefore, Appellants fail to address and rebut the Examiner's rejections R2 and R3. Accordingly, we sustain rejections R2 and R3. col. 2, ll. 37-40; ll. 35-41; also see col. 2, ll. 27-32; the method includes detecting first and second channels which also discloses [c] to [c2]). 6 Dorenbosch discloses "[t]he controller, for example, programs the synthesizer thus tuning the receiver to and allowing it to operate to monitor a channel and receive various messages on that channel. The receiver scans channels or is scanning channels as the synthesizer is successively programmed for one channel after another." (Emphasis added; col. 6, ll. 57- 63). Appeal 2011-012138 Application 11/102,997 8 DECISION We affirm the Examiner's rejection of claims 1 and 20 under § 102. We affirm the Examiner's rejections R2 and R3 of claims 2-19, and 21-38 under § 103. No time for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f). AFFIRMED tj